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Exhibit 10.22
EXHIBIT D
PATENT AND INVENTION DISCLOSURE
ASSIGNMENT AND LICENSE AGREEMENT
This Agreement is made effective as of February 26, 1998 ("Effective
Date"), between Micron Electronics, Inc. ("MEI"), a corporation having an office
at 900 East Karcher Road, Nampa, Idaho 83687, and MCMS, Inc. (f/k/a Micron
Custom Manufacturing Services) ("MCMS"), a corporation having a place of
business at 16399 Franklin Road, Nampa, Idaho 83687.
Whereas, this Agreement is made pursuant to, and is attached as a
Exhibit to, that Recapitalization Agreement dated December 21, 1997 by and among
MCMS, MEI, and Cornerstone Equity Investors IV, L.P.;
Whereas MEI is the owner of certain United States patents, patent
applications, and invention disclosures; and
Whereas MCMS desires to acquire MEI's entire right, title and interest
in and to the Patents, as defined below; and
Whereas MEI is willing to assign the Patents to MCMS for good and
valuable consideration, the adequacy and receipt of which is hereby
acknowledged, and on the terms and conditions set forth in this Agreement;
Now, therefore, MEI and MCMS hereby agree to the following:
1. Definitions
1.1. "Affiliates" shall mean MEI's Subsidiaries, MEI's
Parent, and the Subsidiaries of MEI's Parent.
1.2. "Subsidiary" shall mean a corporation, company, or other legal
entity (i) more than fifty percent (50%) of whose outstanding
shares or securities (representing the right to vote for the
election of directors or other managing authority) are, now or
hereafter, owned or controlled, directly or indirectly, by MEI
or Micron Technology, Inc.; or (ii) which does not have
outstanding shares or securities, but more than fifty percent
(50%) of whose ownership interest representing the right to
make the decisions for such corporation, company, or other
entity is, now or hereafter, owned or controlled, directly or
indirectly, by MEI or Micron Technology, Inc.
1.3. "Parent" shall mean a corporation, company, or other legal
entity (i) owning or controlling, directly or indirectly, now
or hereafter, more than fifty percent (50%) of the outstanding
shares or securities (representing the
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right to vote for the election of directors or other
managing authority) of MEI; or (ii) owning or
controlling, now or hereafter, directly or
indirectly, more than fifty percent (50%) of the
ownership interest that represents the right to make
decisions for MEI.
1.4. "Patents" shall mean United States patents listed in
Exhibit A, United States patent applications listed
in Exhibit B, and MEI invention disclosures listed in
Exhibit C, including all divisionals, continuations,
continuations-in-part, reissues, reexaminations,
extensions, foreign counterparts or equivalents
thereof, and all inventions claimed or disclosed
within the foregoing.
2. Warranties
2.1. MEI warrants that it is the sole owner of the
Patents, that MEI has not previously granted any
assignment or exclusive license in or to the Patents
to any third party, and that MEI has the full right
and capacity to assign the Patents to MCMS, and to
enter into and carry out its obligations under this
Agreement, without conflicting with any other
obligation of MEI.
3. Assignment and Grant Back License
3.1. MEI agrees to assign, and hereby does assign, to
MCMS, MEI's entire right, title and interest in and
to the Patents, including without limitation, damages
and payments for past or future infringements
thereof, if any, and the right to bring suit and
recover against any third party for acts of
infringement occurring before the date of this
Agreement, if any. MEI agrees to execute,
concurrently herewith, a formal assignment document
(the "Assignment") for the Patents in the form
attached hereto. In the event of any conflict between
the provisions of this Agreement and the Assignment,
the provisions of this Agreement shall take
precedence.
3.2. Within thirty (30) days after the date of this
Agreement, MEI will deliver to MCMS all documentation
in MEI's possession or control relating to the
Patents. MEI may, at its discretion, retain a copy of
any documentation provided to MCMS pursuant to this
subparagraph.
3.3. MCMS hereby grants MEI and MEI's Affiliates, an
irrevocable (except as set forth in Section 3.6),
non-transferable, fully paid up, worldwide,
non-exclusive license to practice all inventions
covered by the Patents, and to make and have made,
use, offer for sale, sell, and lease products, which,
without the license granted hereunder, would
constitute an infringement of the Patents. MEI shall
have no right to sublicense the Patents to any third
party without the prior written consent of MCMS,
which consent shall not
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be unreasonably withheld, provided, however, that
MCMS's failure to consent to MEI's grant of a
sublicense to an MCMS competitor shall not be deemed
to be unreasonable.
3.4. MEI and MEI's Affiliates shall not assign or transfer
any of its rights granted hereunder without the prior
written consent of MCMS. Notwithstanding the
foregoing, an assignment or transfer of the Agreement
and the licenses granted therein may be effected by
operation of law, such as for example, by merger,
consolidation, sale of the business or assets,
reincorporation, or nonbankruptcy reorganization.
3.5. Neither MCMS nor MEI shall be required to disclose or
to license to the other any inventions and
improvements relating to the Patents which are first
conceived after the Effective Date.
3.6. This Agreement shall commence on the Effective Date
and shall continue thereafter in perpetuity;
provided, however, that either party may, upon ninety
(90) days written notice to the other party,
terminate this Agreement in the event of a material
breach thereof by such party; provided, further, that
if such breach is cured within such ninety (90) day
period, this Agreement shall not be so terminated.
4. Miscellaneous
4.1. Except as set forth in the Recapitalization
Agreement, both MEI and MCMS neither warrant nor
represent that the use of the Patents will not result
in infringement of any patents of any third party.
4.2. MEI shall indemnify and hold MCMS and its Affiliates
and their respective officers, directors, employees,
agents, shareholders, principals, successors and
assigns harmless from and against any claims,
judgments, damages, costs (including attorneys' fees)
and expenses arising out of MEI's and MEI's
Affiliates' practice of the Patents under this
Agreement, including without limitation any claim
alleging infringement or misappropriation of third
party intellectual property rights.
4.3. MEI shall, at MCMS' expense, cooperate with and
assist MCMS in the provision of documents and
information in connection with the Patents as
reasonably necessary to effectuate the procurement
and maintenance of the Patents. MCMS shall have the
exclusive right, but shall not be obligated, to take
appropriate legal action against any third party that
to its knowledge infringes the Patents.
4.4. No modification of or amendment to this Agreement
shall be valid unless in a writing signed by the
parties hereto referring specifically to this
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Agreement and stating the parties' intention to modify or amend
the same. Any waiver of any term or condition of this Agreement
must be in a writing signed by the party hereto sought to be
charged with such waiver referring specifically to the term or
condition to be waived, and no such waiver shall be deemed to
constitute the waiver of any other breach of the same or of any
other term or condition of this Agreement.
4.5. All notices and other communications hereunder shall be
sufficiently given for all purposes hereunder if in writing and
delivered personally, sent by documented overnight delivery
service or, to the extent receipt is confirmed, telecopy,
telefax or other electronic transmission service to the
appropriate address or number as set forth below or to such
other address or to the attention of such other person as one
party may designate by written notice to the other party
hereto.
NOTICES TO MEI SHALL BE ADDRESSED TO:
Micron Electronics, Inc.
900 East Karcher Road
Nampa, Idaho 83687
Attention: General Counsel
Telecopy No: (208) 893-8711
WITH A COPY TO:
(which shall not constitute notice to MEI)
Wachtell, Lipton, Rosen & Katz
51 West 52nd Street
New York, New York 10019
Attention: Barry A. Bryer
Telecopy No: (212) 403-2000
NOTICES TO MCMS SHALL BE ADDRESSED TO:
MCMS, Inc.
16399 Franklin Road
Nampa, Idaho 83687
Attention: President
Telecopy No: (208) 898-2789
WITH A COPY TO:
(which shall not constitute notice to MCMS)
Cornerstone Equity Investors, L.L.C.
717 Fifth Avenue
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Assignment and License Agreement
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Suite 1100
New York, New York 10022
Attention: Tony Downer
Michael E. Najjar
Telecopy No: (212) 826-6798
and
Kirkland & Ellis
153 East 53rd Street
New York, New York 10022
Attention: Frederick Tanne
Telecopy No: (212) 446-4900
4.6 The headings and captions contained in this Agreement are for
reference purposes only and shall not affect in any way the
meaning or interpretation of this Agreement. The use of the
word "including" herein shall mean "including without
limitation."
4.7 The language used in this Agreement shall be deemed to be the
language chosen by the parties hereto to express their mutual
intent, and no rule of strict construction shall be applied
against any person.
4.8 This Agreement and the Recapitalization Agreement contain the
entire agreement and understanding between the parties hereto
with respect to the subject matter hereof and supersede all
prior agreements and understandings, whether written or oral,
relating to such subject matter.
4.9 Any provision of this Agreement which is invalid or
unenforceable shall be ineffective to the extent of such
invalidity or unenforceability, without affecting in any way
the remaining provisions hereof.
4.10 Except as specifically provided herein, neither MEI nor MCMS
shall act or represent or hold itself out as having authority
to act as an agent or partner of the other party, or in any
way bind or commit the other party to any obligations. The
rights, duties, obligations and liabilities of the parties
shall be several and not joint or collective, and nothing
contained in this Agreement shall be construed as creating a
partnership, joint venture, agency, trust or other association
of any kind, each party being individually responsible only
for its obligations as set forth in this Agreement.
4.11 The terms and conditions of this Agreement shall be governed
by and interpreted under the laws of the State of Idaho, and
may not be superseded, amended or modified except by written
agreement between
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the parties. Any litigation brought by a party to this
agreement shall be brought exclusively in the state or federal
courts located in Idaho.
In witness whereof, this Agreement has been executed by duly
authorized representatives of the parties on the date below.
Micron Electronics, Inc. MCMS, Inc.
By: /s/ T. Erik Oaas By: /s/ Robert F. Subia
--------------------------------- ---------------------------------
T. Erik Oaas Robert F. Subia
Executive Vice President, President and Chief Executive
Finance and Chief Financial Officer Officer
Date: February 26, 1998 Date: February 26, 1998
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Exhibit A
PATENTS
1. U.S. Patent No. 4,885,841 for "Vibrational Method of Aligning the Leads of
Surface Mount Electronic Components with the Mounting Pads of Printed
Circuit Boards During the Mollen Solder Mounting Process," issued December
12, 1989.
2. U.S. Patent No. 5,247,844 for "Semiconductor Pick-and-Place Machine
Calibration Apparatus," issued September 28, 1993.
3. U.S. Patent No. 5,237,622 for "Semiconductor Pick-and-Place Machine
Automatic Calibration Apparatus," issued August 17, 1993.
4. U.S. Patent No. 5,433,013 for "Fixture For Alignment of Vacuum Nozzles On
Semiconductor Manufacturing Equipment," issued July 18, 1995.
5. U.S. Patent No. 5,385,291 for "Method Employing an Elevating of Atmospheric
Pressure During The Heating and/or Cooling Phases of Ball Grid Array (BGA)
Soldering of An IC Device to A PCB," issued January 31, 1995.
6. U.S. Patent No. 5,539,992 for "Fixture For Alignment of Vacuum Nozzles on
Semiconductor Manufacturing Equipment," issued July 30, 1996.
7. U.S. Patent No. 5,537,204 for "Automatic Optical Pick-and-Place Calibration
and Capability Analysis System For Assembly of Components onto Printed
Circuit Boards," issued July 16, 1996.
8. U.S. Patent No. 5,540,376 for "Angled Pallets For Wave Soldering," issued
July 30, 1996.
9. U.S. Patent No. 5,617,990 for "Shield and Method for Selective Wave
Soldering," issued April 8, 1997.
10. U.S. Patent No. 5,667,077 for "Module Handling Apparatus And Method With
Rapid Switchover Capability," issued September 16, 1997.
11. U.S. Patent No. 5,704,535 for "Shield and Method for Selective Wave
Soldering," will issue January 6, 1998.
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Exhibit B
PATENT APPLICATIONS
1. U.S. Patent Application No. 08/800,069 for "Air Bladder Fixture Tooling for
Supporting Circuit Board Assembly Processing," filed February 12, 1997.
2. U.S. Patent Application No. 08/602,346 for "Improved Actuator Stem and
Actuator Design," filed February 16, 1996.
3. U.S. Patent Application No. 08/410,388 for "Spring Roll Pins For Printed
Circuit Board Routing," filed July 29, 1993.
4. U.S. Patent Application No. 08/686,781 for "Wave Solder Method For
Attaching Components to A Printed Circuit Board," filed July 25, 1996.
5. U.S. Patent Application No. 08/553,763 for "Thermal Box For A Semiconductor
Test System," filed October 23, 1995.
6. U.S. Patent Application No. 08/891,954 for "Module Handling Apparatus and
Method With Rapid Switchover Capabilities," filed July 14, 1997.
7. U.S. Patent Application No. 08/712,371 for "Universal Testing Device,"
filed September 11, 1996.
8. U.S. Patent Application No. 08/695,613 for "Fixture For Testing and
Prepping Light-Emitting Diodes," filed August 12, 1996.
9. U.S. Patent Application No. 08/706,448 for "Method And Apparatus For
Depositing Solder and Adhesive Materials Onto A Printed Circuit Board,"
filed September 3, 1996.
10. U.S. Patent Application No. 08/775,664 for "Salvage Method and Apparatus
For Recovering Microelectronic Components From Printed Circuit Boards,"
filed December 31, 1996.
11. U.S. Patent Application No. 08/761,701 for "Universal Fixture For Holding
Printed Circuit Boards During Processing," filed December 6, 1996.
12. U.S. Patent Application No. 08/772,155 for "Method and Apparatus For
Preserving Solder Paste in the Manufacturing of Printed Circuit Board
Assemblies," filed December 20, 1996.
13. U.S. Patent Application No. 08/773,624 for "Method and Apparatus For
Coupling Together Printed Circuit Boards," filed December 20, 1996.
14. U.S. Patent Application No. 08/855,092 for "Electronic Component Connecting
Tool and Method," filed May 13, 1997.
15. U.S. Patent Application No. 08/885,315 for "Apparatus for Using A Damage
IC," June 30, 1997.
16. U.S. Patent Application No. 08/885,670 for "Method of Using A Damaged IC,"
filed June 30, 1997.
17. U.S. Patent Application No. 08/918,613 for "Apparatus for Bending Component
Leads," filed August 22, 1997.
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18. U.S. Patent Application No. 08/916,691 for "Method For Bending Component
Leads," filed August 22, 1997.
19. U.S. Patent Application No. 08/833,914 for "Universal Fixture For
Supporting and Holding Populated Sides of Printed Circuit Board Assemblies
During Processing," filed April 10, 1997.
20. U.S. Patent Application No. 08/895,765 for "Apparatus For Calibrating
Surface Mounting Processes In Printed Circuit Board Assembly Manufacturing,"
filed July 17, 1997.
21. U.S. Patent Application No. 08/895,766 for "Method For Calibrating Surface
Mounting Processes in Printed Circuit Board Assembly Manufacturing," filed
July 17, 1997.
22. U.S. Patent Application No. 08/882,479 for "Apparatus For Holding Printed
Circuit Board Assemblies in Manufacturing," filed June 25, 1997.
23. U.S. Patent Application No. 08/882,480 for "Method For Holding Printed
Circuit Board Assemblies in Manufacturing," filed June 25, 1997.
24. U.S. Patent Application No. 08/852,335 for "Alignment Fixture For
Solder-Wave Machine," filed May 2, 1997.
25. U.S. Patent Application No. 08/897,093 for "Solder Paste Brick," filed
July 18, 1997.
26. U.S. Patent Application No. 08/896,412 for "Method of Attaching a Device To
A Circuit Board," filed July 18, 1997.
27. U.S. Patent Application No. 08/925,188 for "Apparatus For Supporting
Printed Circuit Board Assemblies," filed September 8, 1997.
28. U.S. Patent Application No. 08/926,139 for "Method For Supporting Printed
Circuit Board Assemblies," filed September 8, 1997.
29. U.S. Patent Application No. 08/919,626 for "Improved Carrier Socket For
Receiving A Damaged IC," filed August 28, 1997.
30. U.S. Patent Application No. 08/919,536 for "Improved Carrier Socket For
Receiving A Damaged IC," filed August 28, 1997.
31. U.S. Patent Application No. 08/924,278 for "High Speed Interface For
Testing Semiconductor Components," filed September 8, 1997.
32. U.S. Patent Application No.____________ for "Air Bladder Fixture Tooling
For Supporting Circuit Board Assembly Processing," filed February 11, 1998.
33. U.S. Patent Application No.____________ for "Real-Time Manufacturing
Process Control Monitoring Method," filed February 3, 1998.
34. U.S. Patent Application No.____________ for "Real-Time Manufacturing
Process Control Monitoring Apparatus," filed February 3, 1998.
35. U.S. Patent Application No.____________ for "Glass Parts Pick-Up Jig,"
filed January 20, 1998.
36. U.S. Patent Application No.____________ for "Method For Calibrating A Pick
and Place Machine Using A Glass Parts Pick-Up Jig," filed January 20, 1998.
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37. U.S. Patent Application No. for "Z Origin Calibration Jig,"
filed January 20, 1998.
38. U.S. Patent Application No. for "Method For Calibrating The
Z-Origin Position," filed January 20, 1998.
39. U.S. Patent Application No. 08/772,155 for "Method For Preserving Solder
Paste In The Manufacturing of Printed Circuit Board Assemblies," filed
November 24, 1997
40. U.S. Patent Application No. for "Universal Fixture For Holding
Printed Circuit Boards During Processing," filed December 13, 1997
41. U.S. Patent Application No. for "Universal Fixture For Holding
Printed Circuit Boards During Processing," filed December 13, 1997
42. U.S. Patent Application No. for "Universal Fixture For Holding
Printed Circuit Boards During Processing," filed December 13, 1997.
43. U.S. Patent Application No. for "Universal Fixture For Holding
Printed Circuit Boards During Processing," filed December 13, 1997.
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Exhibit C
Invention Disclosures
1. "Apparatus for Bending Component Leads," disclosed August 30, 1996.
2. "A Reflow Soldering Method and Apparatus," formerly known as "PCMCIA
Reflow Card Connector Pallet," disclosed March 5, 1997.
3. "Calibration Jig for an Automated Placement Machine," disclosed June 6,
1997.
4. A Device for the Recognition and Attachment of Solder Spheres to BGA
Components," disclosed August 8, 1997.
5. "A Method And Apparatus For Leveling The Upper Surface of A PCB," formerly
known as "XYZ-Lock," disclosed August 18, 1997.
6. "Paste Containment Barrier," disclosed September 8, 1997.
7. "Safety Switch for Oxygen Analyzer Unit," disclosed September 15, 1997.
8. "Ganged Modular Connector Test Device," disclosed September 11, 1997.
9. "Non Connected Drainage Channels for Selective Wave Solder Pallets,"
disclosed October 3, 1997.
10. "Handler For Printed Circuit Boards and Stencil Templates," formerly known
as "Template Visualizer," disclosed October 14, 1997.
11. "Fuji IP, Fuji CP6 Cycle Stop Lock Out Tag Out," disclosed October 16,
1997.
12. "Fine Pitch Wash Base," disclosed October 16, 1997.
13. "CTool Light Guide," disclosed October 16, 1997.
14. "Wire Formers," disclosed November 5, 1997.
15. "Mini Temperature Chamber," disclosed December 15, 1997.
16. "UV Safety Sleeve with a Vacuum Hose Attached," disclosed December 15,
1997.
17. "Method to Convert WE-per-byte Functionality to CAS-per-byte," disclosed
November 26, 1997.
18. "Camera Aided Screen Printer Calibration Process," disclosed January 22,
1998
19. "Cable Accessibility Bracket," disclosed February 5, 1998
20. "Method For Data And Data Clock Alignment In A SLDRAM System," disclosed
February 2, 1998.
21. "Dark Horse Tester Adjustable Guides," disclosed February 2, 1998.
22. "FUJI CP6 Access Safety Switch," disclosed February 2, 1998.
23. "Module Edge Cleaner," disclosed February 11, 1998.